MALTA Law and Practice Contributed by: Deo Falzon, Fenech & Fenech Advocates
equitable remuneration if the invention is of exception- al benefit to the employer, taking into consideration the employee’s remuneration. In practice, however, these matters are regulated by contract. A patent assignment must be made in writing and clearly identify the patent concerned. It can cover existing patents, pending applications and/or future rights. It must be recorded in the patent register; oth- erwise, it is only valid inter partes and not effective against third parties in good faith. A patent can also be licensed via exclusive or non- exclusive licences, which must be made in writing and may also be recorded in the patent register. 1.5 Patent Infringement and Defences Any breach of the exclusive rights defined in 1.3 Scope, Term and Maintenance of Patent Rights constitutes direct infringement. Indirect infringement is also possible where persons supply or offer to sup- ply means relating to an essential element of an inven- tion, knowing or where it is obvious that those means are suitable and intended for putting the invention into effect. Patent invalidity may be raised by way of defence or counterclaim. Other defences raised by way of excep- tions to the exclusive rights granted by a patent can be set up: • where the act is done privately and for non-com- mercial purposes, provided that such act does not significantly prejudice the economic interests of the proprietor of the patent; • where the act consists of making or using such a product for purely experimental purposes or for scientific research; • where the act consists of the extemporaneous preparation for individual cases, in a pharmacy or by a medical or veterinary doctor, of a medicine in accordance with a medical prescription or of acts concerning the medicine so prepared; • when an act is done for purposes which can rea- sonably be related to the development and pres- entation of information required by the law of Malta or any other country that regulates the production,
use or sale of medicinal or phytopharmaceutical products; • when the use of the patented invention is on board vessels of the countries of the Paris Union in the body of the vessel, in the machinery tackle, gear and other accessories, when such vessels tem- porarily or accidentally enter the waters of Malta, provided that the invention is used exclusively for the needs of the vessel; and • when the use of that patented invention is in the construction or operation of aircraft or land vehi- cles of countries of the Paris Union or of acces- sories to such aircraft or land vehicles when such aircraft or vehicles temporarily or accidentally enter the territory of Malta. 1.6 Patent Enforcement and Remedies The First Hall of the Civil Court deals with patent infringements; however, the Patents Tribunal deals with revocation and invalidity proceedings. Interim and ex parte measures fall within the jurisdiction of the Civil Court and there are a variety of injunctions avail- able, including specific measures that may be issued by virtue of the Enforcement of Intellectual Proper- ty Rights Regulations, Chapter 488 of the Laws of Malta. Interim injunctions are typically resolved within months; however, main infringement actions can take years. If a particular infringing act in question is already the subject of infringement proceedings, the defendant in the infringement proceedings is precluded from insti- tuting proceedings for a declaration of non-infringe- ment. Proceedings for non-infringement may also be insti- tuted in conjunction with revocation proceedings, unless such revocation proceedings form part of ongoing infringement proceedings. If there are ongoing EPO proceedings, these would run in parallel to local action. However, this has to be dealt with on a case-by-case basis; the Patents Tribunal is only statutorily bound to stay proceedings for infringement in respect of:
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